180s, Inc. et al v. Costco Wholesale Corporation et al

Filing 74

MEMORANDUM. Signed by Judge J. Frederick Motz on 7/24/14. (apls, Deputy Clerk)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF MARYLAND
180S, INC., et al.

v.

COSTCO WHOLESALE CORP., et al.

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Civil No. JFM-13-3239

MEMORANDUM
Plaintiffs 180s, Inc. and 180s, LLC brought this action against defendants Costco
Wholesale Corporation and SM Global, LLC asserting infringement of two patents. The parties
have identified four areas of disagreement for claim construction from U.S. Patent No. 5,835,609
(“the ‘609 Patent”) and U.S. Patent No. 6,880,174 (“the ‘174 Patent”). After the parties briefed
the issues, the court held a claim construction hearing on May 30, 2014. This opinion outlines
my decisions on the meaning of the disputed terms.
BACKGROUND
In its suit against Costco and SM Global, 180s is asserting several claims from the ‘609
and ‘174 Patents. Both patents relate to “around the head” ear warmers. The first claim at issue
for the purposes of claim construction is independent claim 13 from the ‘609 Patent, which states
in relevant part:
13. A covering device to be worn over the ears of an individual and extending around the
back of the individual’s head or neck, comprising:
a band having a first curved portion and a second curved portion, one end of each
of the first and second curved portions overlapping and slidably attached to
opposing curved portion, such that the relative overall length of the band may be
adjusted,

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two ear cups, one ear cup attached to the free end of the first curved portion and
the second ear cup attached to the free end of the second curved portion, the ear
cups defining a cavity formed from two support flanges, formed in a V-shape, and
a semi-circular frame portion which extends between opposite projections of the
V-shape of the flanges, the semi-circular portion and the support flanges defining
a central opening, an attachment flange projecting from the vertex of the support
flanges in a direction opposite the semi-circular portion, the attachment flange
including means thereon for rotatably attaching the ear cups to the free ends of the
first and second curved portions, and
fabric means covering the band and the ear cups on both sides thereof and
forming a pocket within the cavity of the ear cups.
See ‘609 Patent at col. 13 ll. 30–54, ECF No. 54-3. The other claim at issue, independent claim
11 of the ‘174 Patent, states in relevant part:
11. An ear protection device, comprising:
a band, the band including a first end, a second end, a first locking protrusion
located proximate to the first end of the band, a second locking protrusion located
proximate to the second end of the band, the first locking protrusion and the
second locking protrusion extending from the band in substantially the same
direction;
a first ear cup portion, the first ear cup portion being configured to receive the
first locking protrusion to fixedly couple the first ear cup portion to the band, the
first locking protrusion including a barbed shape; and
a second ear cup portion, the second ear cup portion being configured to receive
the second locking protrusion.
See ‘174 Patent at col. 12 ll. 24–35, ECF No. 54-4.
180s moved for a temporary restraining order against Costco to stop it from selling the
allegedly infringing product, but the court denied the TRO at a hearing on November 20, 2013.
STANDARD
Claim construction is a question of law for the court to decide. See O2 Micro Int’l Ltd. v.
Beyond Innovation Tech. Co., 521 F.3d 1351, 1360 (Fed. Cir. 2008) (quoting Markman v.
Westview Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir. 1995) (en banc) aff’d 517 U.S. 370

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(1996)). “It is a bedrock principle of patent law that the claims of a patent define the invention to
which the patentee is entitled the right to exclude.” Phillips v. AWH Corp., 415 F.3d 1303, 1312
(Fed. Cir. 2005) (en banc) (internal quotation marks and citations omitted). Accordingly, “[t]he
purpose of claim construction is to ‘determin[e] the meaning and scope of the patent claims
asserted to be infringed.’” O2 Micro, 521 F.3d at 1360 (citing Markman, 52 F.3d at 976).
A claim’s words “are generally given their ordinary and customary meaning.” Phillips,
415 F.3d at 1312 (internal quotation marks and citations omitted). In the claim construction
setting, “the ordinary and customary meaning of a claim term is the meaning that the term would
have to a person of ordinary skill in the art in question at the time of the invention.” Id. at 1313.
Sometimes the meaning of claim language to a person of ordinary skill in the art is obvious and
aligns with a widely accepted meaning; other times, the meaning of terms is not immediately
apparent and a more searching inquiry is necessary. Id. at 1314.
In conducting the claim construction analysis, courts may utilize two categories of
evidence: intrinsic sources and extrinsic sources. See Vitronics Corp. v. Conceptronic, Inc., 90
F.3d 1576, 1582–83 (Fed. Cir. 1996). Intrinsic sources include the words of the claims
themselves, the specification, and the prosecution history, and because these sources are the most
relevant evidence of the meaning of disputed terms, courts should consider them first. Id. The
context of terms in claims may be instructive, as may be the usage of terms in other independent
or dependent claims. See Phillips, 415 F.3d at 1314. Additionally, the claims, while of primary
importance, must be construed in light of the specification. Id. at 1315. “[T]he specification ‘is
always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the
single best guide to the meaning of a disputed term.’” Id. (quoting Vitronics, 90 F.3d at 1582);
see also Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998)

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(“Ultimately, the interpretation to be given a term can only be determined and confirmed with a
full understanding of what the inventors actually invented and intended to envelop with the
claim. The construction that stays true to the claim language and most naturally aligns with the
patent’s description of the invention will be, in the end, the correct construction.” (internal
citation omitted)). At the same time, courts should be mindful of the fine line between “using
the specification to interpret the meaning of a claim and importing limitations from the
specification into the claim.” See Phillips, 415 F.3d at 1323.
The last type of intrinsic evidence is the prosecution history. The prosecution history
includes “the complete record of the proceedings before the PTO and includes the prior art cited
during the examination of the patent.” Id. at 1317. One valuable purpose of consulting the
prosecution history is to see if the inventor limited the scope of the claimed invention, thereby
providing reason for a court to narrowly interpret the claim terms at issue. See id.
Extrinsic evidence also may inform the court’s analysis of disputed claim terms.
Extrinsic evidence includes “all evidence external to the patent and prosecution history,
including expert and inventor testimony, dictionaries, and learned treatises.” Id. (quoting
Markman, 52 F.3d at 980). Extrinsic evidence is, however, less reliable than intrinsic evidence
unless it is analyzed in light of the intrinsic evidence. See id. at 1318–19. Thus, if a disputed
term’s meaning is unambiguous in view of the intrinsic evidence, extrinsic evidence cannot
contradict that meaning. See id. at 1324 (citing Vitronics, 90 F.3d at 1583).
ANALYSIS
The parties have submitted four phrases for claim construction. The parties dispute the
meaning or scope of three phrases from the ‘609 Patent, all from independent claim 13:
(1) “an attachment flange”;

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(2) “the attachment flange including means thereon for rotatably attaching the ear cups to
the free ends of the first and second curved portions [of the band]”; and
(3) “fabric means covering the band and the ear cups on both sides thereof and forming a
pocket within the cavity of the ear cups.”
And with respect to the ‘174 patent, the parties disagree about the meaning of only one phrase
from independent claim 11: “the first locking protrusion including a barbed shape,” with the
disagreement focused on the meaning of the term “barbed shape.”
I.

“An attachment flange”
180s construes an attachment flange simply as “a structure for attachment.” Costco and

SM Global construe an attachment flange more narrowly as “a structure integrally formed with
the ear cup that attaches the ear cup to the curved portions of the band.” Thus, the parties agree
that an attachment flange is a structure for attachment, and the only question is whether I
incorporate the additional limitations included in Costco and SM Global’s construction. For the
following reasons, I decline to do so.
The construction proposed by 180s comports with the phrase’s plain and ordinary
meaning. The specification demonstrates that, although an attachment flange may take multiple
shapes and designs, it is always described or pictured as a structure for attaching the ear cups to
the band. Thus, this construction captures the meaning of the phrase without improperly limiting
its scope. Support for this construction is also found in outside dictionaries, which define
“flange” essentially as a structure that may serve the purpose of attaching an object to another
object. See, e.g., Webster’s Universal College Dictionary, at 305(1997), ECF No. 53-1
(defining flange as “a rim, collar, ring, or pair of ridges projecting [usually] at right angles from a
shaft, pipe, machine housing, etc., as to strengthen it, provide support, or enable attachment of
object”).

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I decline to impose the additional limitation found in Costco and SM Global’s proposed
construction—that the structure must be integrally formed with the ear cup—for several reasons.
First, although “[d]ifferent terms or phrases in separate claims may be construed to cover the
same subject matter” when the intrinsic evidence supports such a reading, it is also true that
“[w]hen different words or phrases are used in separate claims, a difference in meaning is
presumed.” Nystrom v. TREX Co., Inc., 424 F.3d 1136, 1143 (Fed. Cir. 2005) (comparing
different terms used in two independent claims). Here, independent claim 5, which is unasserted
in this case, describes the attachment flange as “integrally formed” with the ear cup, but
independent claim 13 contains no such requirement. A difference in meaning is therefore
presumed, and evidence from the specification or prosecution history must be cited to overcome
the presumption. See id.1 Second, 180s has identified several preferred embodiments of
attachment flanges that are not integrally formed with the ear cup in the sense that they are not
directly connected to the ear cup or made from the same piece of material. See, e.g., ‘609 Patent
FIGS. 13–15. A construction that excludes these preferred embodiments is rarely correct. See
Vitronics, 90 F.3d at 1583 (explaining that a construction that removes a preferred embodiment
from the scope of a patent claim “is rarely, if ever, correct and would require highly persuasive
evidentiary support”). Moreover, as demonstrated by the parties’ disagreement in the briefings,
the meaning of “integrally formed” is far from obvious. Including this limitation as part of the
construction would unnecessarily confuse the jury down the line.

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Relatedly, I am not persuaded by Costco and SM Global’s reliance on the prosecution history of
unasserted independent claim 5. Independent claim 13 differs from independent claim 5 in
several ways, so the fact that the inventor relied on the integrally formed attachment flange to
distinguish independent claim 5 from the prior art does not necessarily mean that he would need
to do the same to distinguish independent claim 13 from the prior art.
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Finally and notably, I am only construing the meaning of “an attachment flange,” and my
construction must still be understood in the context of the other parts of independent claim 13.
Reading my construction in the context of the undisputed parts of independent claim 13 plainly
shows how the attachment flange relates to the other parts of the invention. See ‘609 Patent col.
13 ll. 45–50 (“[a structure for attachment] projecting from the vertex of the support flanges in a
direction opposite the semi-circular portion, the [structure for attachment] including means
thereon for rotatably attaching the ear cups to the free ends of the first and second curved
portions”). I therefore decline to narrow the construction of attachment flange without
justification when simply reading it in the context of independent claim 13 provides a clear
picture of the claim’s scope.
Accordingly, I construe an attachment flange as “a structure for attachment.”
II.

“The attachment flange including means thereon for rotatably attaching ear cups to
the free ends of the first and second curved portions of the band”
The next disputed phrase, also from independent claim 13, is “the attachment flange

including means thereon for rotatably attaching ear cups to the free ends of the first and second
curved portions of the band.” The parties agree that this phrase should be construed as a meansplus-function phrase under 35 U.S.C. § 112, ¶ 6. Because of the use of the word “means” and
the lack of a definite corresponding structure for performing the function in the claim, I agree
with the parties and construe the phrase as a means-plus-function phrase. See Wenger Mfg., Inc.
v. Coating Mach. Sys., Inc., 239 F.3d 1225, 1232 (Fed. Cir. 2001) (holding that a claim limitation
that uses the word “means” and recites a function without a corresponding definite structure
should be construed under § 112 ¶ 6).
Under § 112, the court must first identify the function of the disputed claim language.
See Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1321 (Fed. Cir. 2003). Here, the parties
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agree upon a construction of the claimed function: “[the attachment flange including] a structure
for attaching the ear cups to the free ends of the first and second curved portions of the band and
for allowing rotation of the ear cups relative to the band.” Finding that this construction is wellsupported by the claim language and specification, I adopt the parties’ construction.
The second step in the means-plus-function analysis is to ascertain the corresponding
structures in the description for performing those functions. See id. “A disclosed structure is
corresponding ‘only if the specification or the prosecution history clearly links or associates that
structure to the function recited in the claim.’” Id. at 1322 (quoting B. Braun Med., Inc. v.
Abbott Labs., 124 F.3d 1419, 1424 (Fed. Cir. 1997)). The parties agree on most of the
corresponding structures, but they disagree on whether Figures 16–24 in the ‘609 patent are
corresponding structures. For the following reasons, I conclude that Figures 16–24 are
corresponding structures.
Figures 16–24 show various embodiments of “living hinges.” See ‘609 Patent at col. 2 ll.
63–65. In fact, Figures 16–24 generally depict different angles of living hinges depicted in
Figures 9–15, which the parties agree are corresponding structures. The specification
unambiguously associates these structures with the function of attaching the ear cups to the band
and allowing for some rotation. See ‘609 Patent at col. 5 ll. 48–53 (explaining that several of the
embodiments in Figures 9–23 depict living hinges that allow for flexing between the flanges
connecting the ear cups to the band); col. 6 ll. 10–16, col. 7 ll. 20–21 (explaining that the living
hinge in Figure 10 “limits the amount of outward rotation” and “permits the inward rotation” of
the ear cup, and explaining that the living hinge depicted in Figure 18 is similar to that depicted
in Figure 10); col. 6 ll. 24–25, col. 7 ll. 1–11 (explaining that the living hinge in Figure 11
permits “a limited amount of inward rotation” of the ear cup, and explaining that the living hinge

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depicted in Figure 16 is similar to that depicted in Figure 11). Costco and SM Global argue that
only the rivet holes and attachment head perform the function at issue, but the specification
teaches that the living hinges work in concert with the rivet holes to allow for rotation of the ear
cups. See ‘609 Patent col. 6 ll. 1–4 (explaining that in addition to the flexing permitted by the
living hinges, “rotation of the ear cup frame member about the rivet further permits collapsing
the ear covering portions into the band”).
Accordingly, because the specification clearly links Figures 16–24 to the recited function,
I conclude they are corresponding structures.
III.

“Fabric means covering the band and the ear cups . . . forming a pocket within the
cavity of the ear cups”
The third disputed phrase from independent claim 13 is “fabric means covering the band

and the ear cups on both sides thereof and forming a pocket within the cavity of the ear cups.”
See ‘609 Patent at col. 13 ll. 51–53. 180s urges the court to construe the phrase as “fabric that
covers both sides of the band and the ear cups and forms a pocket included within the interior of
the ear cups; the pocket need not have a slot or other opening for insertion of an earphone.”
Costco and SM Global counter with the following construction: “A piece of fabric covering the
band and ear cups, sewn with a single seam, and forming a pocket within the ear cups having a
slot for insertion of an earphone.” For the following reasons, I adopt 180s’ construction.
Nothing in the claim language requires a single piece of fabric, a sewn single seam, or a
slot for insertion of ear phones. Furthermore, the specification refutes each of these proposed
limitations. First, Costco and SM Global argue that the fabric means must be comprised of a
single piece of fabric. For support, they rely on the specification’s discussion of Figures 6 and
7A, which states that the ear warmers are “covered by a fabric material.” See ‘609 Patent at col.
4 ll. 49–50. A close reading of the specification, however, reveals that the fabric in Figures 6
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and 7A is contemplated to include multiple layers of fabric. The specification identifies the
fabric material in Figures 6 and 7A with the numeral 40, and in the next paragraph discussing
Figures 8A–8F, the specification states that the fabric 40 “includes multiple layers.” See ‘609
Patent at col. 4 ll. 59–60. Thus, a construction that requires single-layered fabric is contrary to
the preferred embodiment in the patent, and is therefore most likely incorrect. See Vitronics, 90
F.3d at 1583.
Costco and SM Global also argue that the doctrine of claim differentiation supports
limiting the claim scope to a single piece of fabric, but their argument is unpersuasive. The
doctrine of claim differentiation “create[s] a presumption that each claim in a patent has a
different scope.” See SunRace Roots Enter. Co., Ltd. v. SRAM Corp., 336 F.3d 1298, 1302–03
(Fed. Cir. 2003). The presumption is “especially strong when the limitation in dispute is the only
meaningful difference between an independent and dependent claim, and one party is urging that
the limitation in the dependent claim should be read into the independent claim.” Id. at 1303.
The presumption, however, is rebuttable when the intrinsic evidence supports a contrary
construction. See Retractable Techs., Inc. v. Becton, Dickinson & Co., 653 F.3d 1296, 1305
(Fed. Cir. 2011) (“[A]ny presumption created by the doctrine of claim differentiation will be
overcome by a contrary construction dictated by the written description or prosecution history.”
(internal citations and quotation marks omitted)).
My reading that independent claim 13 and dependent claim 18 both cover multiplelayered fabric embodiments does not contravene this doctrine. Here, there are two apparent
differences between independent claim 13 and dependent claim 18—dependent claim 18
expressly covers a device comprised of a plurality of fabric pieces and sewn with a single seam.
See ‘609 Patent at col. 14 ll. 11–13. Under my reading, dependent claim 18 is not rendered

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superfluous because it has the additional requirement of being sewn with a single seam.
Additionally, as explained above, the specification supports reading both independent claim 13
and dependent claim 18 as covering multiple-layered fabric embodiments. Thus, 180s has
rebutted the presumption created by the doctrine of claim differentiation.
Likewise, the specification does not support imposing a limitation that the fabric must be
sewn with a single seam. The specification only states that “[t]he various layers of the fabric
material are combined by sewing or the like.” See ‘609 Patent at col. 5 ll. 23–24. Thus, the
specification does not even require sewing, much less sewing with a single seam. And even
though the preferred embodiments picture a sewn single seam, a court should not read limitations
from these embodiments into otherwise broad claim language. See Phillips, 415 F.3d at 1323.
Furthermore, as previously stated, the doctrine of claim differentiation undermines Costco and
SM Global’s argument that independent claim 13 should have a single-seam requirement.
Because dependent claim 18 is based on independent claim 13 and the only meaningful
difference between the two is dependent claim 18’s single-seam requirement,2 there is a strong
presumption that independent claim 13 does not contain the same single-seam requirement. See
SunRace, 336 F.3d at 1302–03. Neither the specification nor the prosecution history dictates a
contrary construction capable of rebutting this strong presumption. See Retractable Techs., 653
F.3d at 1305. Finally, independent claim 1 expressly requires sewing with a single seam, so if
the patentee had intended to limit independent claim 13 to single-seam embodiments, he knew
how to do so. See Nystrom, 424 F.3d at 1143.
Nor does the specification support a construction of independent claim 13 that requires a
slot for insertion of an earphone. The field of the invention, the summary of the invention, and
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This analysis is based on my earlier conclusion that both independent claim 13 and dependent
claim 18 cover multiple-layered fabric.
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the specification use the permissive term “may” when discussing the incorporation of earphones
into the ear warming device. See ‘609 Patent at col. 1 ll. 13–15 (“The present invention also
relates to an ear protection device that may incorporate audio earphones or similar type
elements.”); col. 2 ll. 2–6 (“The fabric may include an opening within the portion covering the
ear cups so that a earphone [sic] or the like may be inserted into the pocket formed by the frusto
conical frame portion and the fabric covering.”); col. 11 ll. 61–63 (“In addition, speakers, such as
those shown in FIGS. 6, 7b and 27, may be included within the interior of the ear covering
device.”). The use of the word “may” in the specification demonstrates that the slot for
earphones is merely an optional element that should not narrow the claim’s scope. See In re
Johnston, 435 F.3d 1381, 1384 (Fed. Cir. 2006) (“As a matter of linguistic precision, optional
elements do not narrow the claim because they can always be omitted.”).
Costco and SM Global correctly observe that the preferred embodiments depict a slot in
the fabric for insertion of ear phones. See ‘609 Patent at col. 4 ll. 46–58. Given the broad claim
language, however, “the mere fact that the patent drawings depict a particular embodiment of the
patent does not operate to limit the claims to that specific configuration.” See 180s, Inc. v.
Gordini U.S.A., Inc., 699 F. Supp. 2d 714, 721 (D. Md. 2010). Nor am I persuaded by Costco’s
argument that the pocket must have a slot because the pocket’s purpose is to hold earphones.
The pocket must exist as a result of the ear cup structure and the way the fabric covers the
structure, but the specification clearly teaches that the slot may, but need not, exist.
Accordingly, I adopt 180s’ proposed construction that the disputed phrase means “fabric
that covers both sides of the band and the ear cups and forms a pocket included within the
interior of the ear cups; the pocket need not have a slot or other opening for insertion of an
earphone.”

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IV.

“A first locking protrusion including a barbed shape”
Finally, the parties dispute the meaning of “a first locking protrusion including a barbed

shape” as used in independent claim 11 of the ‘174 Patent. 180s argues that the phrase should be
construed as “the first locking protrusion having a shape of a projection angling away from the
band surface so as to make extraction difficult.” Costco and SM Global argue that the phrase
should be construed as “the first locking protrusion having a sharp, pointed shape, like a fish
hook, arrowhead, or arrow.”
I construe the phrase as “the first locking protrusion having a pointed shape angling away
from a main point so as to make extraction difficult.” This construction draws elements from
both parties’ proposed constructions, but it more closely aligns with the substance of Costco and
SM Global’s proposed construction.
I find that the meaning of the term “barbed shape” is readily apparent and that its usage in
the ‘174 Patent aligns with its widely accepted meaning. See Phillips, 415 F.3d at 1314
(recognizing that, in such cases, “general purpose dictionaries may be helpful”). The
specification and embodiments teach that a barbed shape is a point angling away from a main
point, the purpose of which is to make extraction of the band from the ear cup difficult. See ‘174
Patent FIG. 19, col. 9 ll. 6–18. Likewise, various dictionaries consistently define barb as a point
angled away from a main point so as to make extraction difficult. See The New Oxford American
Dictionary, at 128 (2d ed. 2005), ECF No. 54-7 (defining barb as “a sharp projection near the
end of an arrow, fishhook, or similar item, angled away from the main point so as to make
extraction difficult”); Random House Webster’s Dictionary, at 56 (4th ed. 2001), ECF. No. 53-5
(defining barb as “a point projecting backward from a main point, as of a fishhook or
arrowhead”); Merriam-Webster’s Collegiate Dictionary, at 91 (10th ed. 1997), ECF No. 53-6

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(defining barb as “a sharp projection extending backward (as from the point of an arrow or
fishhook) and preventing easy extraction; also: a sharp projection with its point oblique to
something else”); Webster’s Third New International Dictionary, at 174 (1986), ECF No. 53-7
(defining barb as “a sharp projection extending backwards (as from the point of an arrow, spear,
or fishhook) preventing easy extraction from a wound; also: any sharp projection with its point
similarly oblique or crosswise to something else”).
My construction parallels Costco and SM Global’s construction with several exceptions.
My construction does not include the requirement that the shape must be sharp. The preferred
embodiment pictured in Figure 19 shows multiple flat surfaces, and it is clear that while the
barbed shape must be pointed in order to lock the band in place, it does not need to be sharp for
piercing. Nor does my construction include the examples of barbed shapes advocated by Costco
and SM Global and found in various dictionaries. As 180s points out in its briefs, arrowheads
and fishhooks come in various shapes and sizes, so including these terms in the construction may
lead to unnecessary confusion when the jury considers the infringement issue. Lastly, my
construction explains the purpose of the barbed shape—to prevent easy extraction—because I
find it will provide guidance to the jury and is supported by the widely understood meaning of
barbed shape.
CONCLUSION
For the foregoing reasons, the court construes the disputed terms as described above.

July 24, 2014
Date

/s/
J. Frederick Motz
United States District Judge

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